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McDonald's Corp V Future Enterprises Pte LTD (2005) 1 SLR 177 - Case Presentation

A case presentation on McDonald’s Corp v Future Enterprises Pte Ltd [2005] 1 SLR 177 - Trade marks...

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Khairul Idzwan
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1K views16 pages

McDonald's Corp V Future Enterprises Pte LTD (2005) 1 SLR 177 - Case Presentation

A case presentation on McDonald’s Corp v Future Enterprises Pte Ltd [2005] 1 SLR 177 - Trade marks...

Uploaded by

Khairul Idzwan
Copyright
© Attribution Non-Commercial (BY-NC)
We take content rights seriously. If you suspect this is your content, claim it here.
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Download as PPT, PDF, TXT or read online on Scribd
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McDonald’s Corp

V
Future Enterprises Pte Ltd

[2005] 1 SLR 177


Fact of the case:

The respondent’s co., [FE] was in the computer business for ten
years before switching to manufacture ‘instant’ beverages and
noodles. The products are targeted for Russia and Vietnam
markets. To project a ‘Western taste’, FE adopted the prefix
‘Mac’, claiming it came from the word Macintosh. Apart from the
prefix ‘Mac’, FE added a stylised American eagle as part of the
pictorial part of the application marks.
June 1994  1st [beverage] product = MacCoffee
October 1994  2nd [beverage] product = MacTea
Not long after  3rd [beverage] product = MacChocolate and 4th
product = MacNoodles
December 1994  Sells locally
1995  Applied to register MacTea, MacChocolate & MacNoodles
in class 30 including the eagle device
 Applications opposed by the appellant  went to PAR app.
failed  appealed to High Court  FE won  appealed to COA
[present case]
Grounds of appeal:

S. 12(1) of the Trade Mark Acts [Singapore] 


The respondent’s claim was not made in good faith
S. 15 of the Trade Mark Acts [Singapore] 
The registration of the three marks would likely deceive or
cause confusion to the public
S.23(1) of the Trade Mark Acts [Singapore] 
That the application marks were identical with or nearly
resembled the trademarks belonging to the appellant [this
ground was dismissed by the appellant in this appeal]
Note:

Section 15 covers many


things but in this case, the
focus is on ‘being likely to
deceive or cause
confusion’.
Arguments [on S.15]:

‘Mc’ is an essential feature of their marks. Adoption of ‘Mac’ by


respondent may indicates that the respondent’s product came
from the same source
Respondent’s mark application was a descriptive of the product
Some companies sell their products at supermarkets [such as
Haagen Dazs and Movenpick Ice Cream]
Analysis between Respondent’s application and appellant’s mark:
Application mark = intergrated design comprising an eagle
device and a smaller word component
Appellant’s mark = the McDonald’s word on a red background
coupled with the Golden Arches – recognised. Every product sold
with package that bears the golden archers.
Different in term of colours, font, and typeface
However, one of the other point argued by the appellant is that
in a composite word & device mark, purchaser may get confused
with the similarities between the word portions of the two marks.
Argument [on S.12(1)]:
Respondent applied the marks in bad faith as
FE copied the appellant’s mark.

Judgment:
Appeal dismissed
Reasons for judgment:

The appellant want to monopolise the prefix ‘Mc’ and ‘Mac’


[which in court’s view is similar] in all food and beverages
segments albeit the fact that its mark is only registered in class
42 – restaurant and catering service
9 years after the application for the three marks, McDonald’s
still sell its products at its outlets and not at supermarkets
While respondent’s product is ‘instant’ in a way that it is not
readily consumable, the appellant products are immediately
consumable and so, their products are different in nature
Even if a person get confused, the law assumes that every
customer will use ordinary care and intelligence.
As the appeal under Section 15 failed, automatically the
appellant’s appeal under Section 12 failed. [If there was no
problem for the respondent to use the prefix ‘Mac’ for ‘MacTea,
MacChocolate’ etc, why would the use be bad faith to the
appellant then?]
Significance of the case:

S. 14 (1)(a) – shall not register if it is likely to deceive or cause


confusion to the public = the appellant’s ground of appeal
S. 14(1)(d) – shall not register if identical to well-known mark in
Malaysia for same goods of another proprietor
S. 14(1)(e) – not the same good – but the use can caused
damage to the proprietor
S. 24 – Registration of series of marks
S. 25(1) – Registration of marks [ground referred to by the
appellant for their 2nd ground of appeal]
S. 37(b) – Registration not conclusive for offends against
Section 14
S. 38 – Infringement = If a person not a proprietor and used a
trademark similar or identical to the registered trademark and
caused confusion

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